IPR issues and exploitation activities at Saarland University

Transcription

1 IPR issues and exploitation activities at Saarland University Axel Koch

2 Point of departure in Germany Before 2002: most German universities did not file any patent applications and transferred inventions coming from industrial cooperations to the partner for free Change of the German Employee Invention Act in 2002 Abolition of the so-called professors privilege New 42 ArbNErfG Establishment of regional Patent Marketing Agencies (PVA) Subsidized by the federal and the regional government

3 Patent Marketing Agency of Saarland Founded in 2002 Universities Part of WuT GmbH With currently 3 employees and 3 student assistants a small institution which is very closely-linked to Saarland University Responsible exclusively for the evaluation and commercialisation of all inventions created at Saarland Universities Patent applications are made through external patent attorneys

4 Funding Partly funded by Saarland University, regional and national ministries and through money coming from the commercialisation activities The funding is continuously decreasing The break-even point should be reached in 2011

5 Strategy: co-operation agreements IPR in co-operation agreements are an important factor on the way to the break-even point No transfer of inventions to companies free of charge Avoidance of lump-sum payments, if possible royalties Partner company covers patent costs

6 Strategy: licence and sales agreements No lump sum payments if possible Generally preference of licences to sales Negotiation of adequate down payments, minimum licence fees and royalty payments Conditions are defined on a case to case basis

7 Strategy: start-ups Transfer of IP rights to the start-up Relatively low down payment based on patent costs No minimum licence fee but obligation to exercise the licence Royalty payments are compulsory If one of the inventors is involved in the spin-off, he has to waive the inventors bonus

8 Exploitation strategy: Marketing activities company search Company contacts Blind acquisition of potential licensees: Database and internet research Telephone Letter with abstract and fax answer Direct contact Existing contacts of inventors Existing contacts of PVA (own database)

9 Exploitation strategy: Marketing activities databases company search Databases EEN Addresses European SMEs Database of TA Connected to PVA-homepage Technology related databases Lifesciencelink, Pharma-Transfer, TechEx etc.

10 Exploitation strategy: Marketing activities databases company search spin-offs Start-ups Big start-up mentality at Saarland University since 1995: >200 companies 6 start-ups based on 12 university inventions

11 Exploitation strategy: Marketing activities databases Datenbanken company Firmenkontakte search networks Existenzgründungen spin-offs Exploitation through networks Network of small PVAs Collective marketing of technology offers Creation of patent pools PVAs in the Greater Region European project application Goal: Access to bigger market

12 Exploitation strategy: Marketing activities co-operation USA databases Datenbanken company Firmenkontakte search Netzwerke networks Existenzgründungen spin-offs For US market co-operation with ip-xpress US market is very difficult to approach Currently search for new American partner

13 Exploitation strategy: Marketing activities Kooperation co-operation USA USA databases Datenbanken auctions company Firmenkontakte search Netzwerke networks Existenzgründungen spin-offs Patent auctions Mai 2007 first auction in Europe with moderate success In USA very well established Participation in one auction in June 2008 with good success In future auctioning of selected patents will be considered as another marketing strategy

14 Exploitation strategy: Marketing activities Kooperation co-operation USA USA databases Datenbanken Auktionen auctions funds company Firmenkontakte search Netzwerke networks Existenzgründungen spin-offs Patent funds Concept: Acquisition of patents Financing of further development Out-licencing Until now: 2 patent families sold to fund of Deutschen Bank Lump-sum payment and profit sharing

15 Mercury Study Visit July the 1 st and 2 nd, 2010 Exploitation strategy: Marketing activities Public relations collateral activities Seminars for SMEs Press releases Success Stories Auktionen auctions Netzwerke networks Existenzgründungen spin-offs company Firmenkontakte search Fonds funds Kooperation co-operation USA USA databases Datenbanken public relations

16 Present success Quantitative: More than 330 invention disclosures More than 100 patent filings 57 licence or sales agreements Qualitative: Very positive evaluation by scientists, university management and cooperating companies In 2008 one of the best agencies at German universities

17 Goals for the future Closer co-operation with similar institutions on a national and international level Creation of a bigger patent portfolio in order to reach a critical mass for the commercialisation Negotiation of as many as possible long-term licence contracts instead of lump-sum sales Passing the break-even point

18 Patent Law and Patent Search

19 Patent Law Patent law as part of intellectual property rights 1. Competition law/trademark law business activities and marketing activities trademark protection 2. Design law design, colours, forms/shapes 3. Copyright focus on creation: literature, music,... is generated by creating the book, song, Patent law/utility models focus on invention technical/engineering

20 Approach to Patent Law 1 PatG: requirements for a patent grant patents will be granted for inventions that are new, based on an inventive step and suitable for industrial application. novelty invention requirements for a patent grant inventive step industrial application

21 Invention Not defined by law It exists a negative checklist in the German patent law: Discoveries, scientific theories, mathematic methods Aesthetic creation of forms Plans, rules and methods for theoretical activities, for games or business activities and data processing software Publication and exploitation must not violate public moral and ethical principles

22 Inventions in biotechnology Patenting inventions from this scientific field is generally possible, but ethical questions must be respected. Not patentable are: Plant species and animal breeds Mainly biological methods for breeding plants and animals The human body in its particular phases of development and the discovery of its components Inventions that would violate public ethical principles in case of their commercialization

23 Inventions in biotechnology Patentable are: Inventions on plants or animals, if the invention s execution is technically not limited on one particular plant species or animal breed An isolated component of the human body or a body component extracted by a technical process can be patentable, even if the composition of the components is identical to the composition of natural components. Problems are the different national public policies in case of international patent applications and the detailed compliance with those regulations.

24 Novelty An invention is not part of the state of the art: Requirement of absolute novelty Relevant date: day of application/filing date, priority date State of the art: Every kind of knowledge that has been published before the filing date. Patent applications that are not yet published It must be possible to detect the invention s character

25 Inventive Step The doctrine must not result from the state of the art in an obvious way for an expert Objective evaluation by an average expert which is skilled in the respective area Basis of evaluation: publicly available state of the art BUT: possibility of combinatorial inventions

26 Industrial application Includes all types of businesses but not independent professions An invention has to be useful Exceptions: medical diagnosis and treatment methods are excluded from patent protection

27 Who is inventor? Inventor is the person whose knowledge the invention originates from or by whose mental effort the doctrine was developed This does not hold for simple assistant work or the inspirer Co-inventions are possible

28 Who is applicant? The applicant is not necessarily the inventor The applicant is allowed to commercialize the invention In principle the inventor owns the patent The right for application can be transferred by law or contract

29 Law on employees inventions Exception from the principle that the patent belongs to the inventor The right of application und thus of commercialization is therefore transferred to the employer Premise for this: the invention is an employees invention Invention made during work < > based on work experience Until 2009: The employer has to claim the invention From now on: The employer has to release the invention

30 Rights and obligations of the inventor (employee) / of the employer Inventions disclosure by the employee The employer has the possibility to claim the invention (old) or to release the invention (new) Obligation to file a patent application Right to be adequately compensated Special regulations for universities ( 42 ArbNErfG)

31 Proceedings at Saarland 4-month-deadline University 5. Release or claim by university 4. Recommendation by the PVA to the university on claiming the invention 3. Evaluation of patentability and commercialization aspects 2. Forwarding of the disclosure to the PVA 1. Inventions disclosure by academic researcher to university s administration

32 Patent Application (national/international) Application is necessary to get the priority Priority deadline: 1 year Publication after 18 months PCT-Application European patent application/european patent After 30 months: start of national/regional phase

33 Examination procedure Search report/examination report Publication Grant Opposition/limitations proceedings Complaints procedure/action of nullity

34 Application Fees Filing fees Search/examination fee National fees for international patent applications Renewal fees Patent attorney s fees

35 Structure of patent applications Four parts: Front page, Description, Claims and Drawings Front page Bibliographic data (patent number, applicant, inventor, title) Abstract Important drawing

36 Structure of patent applications Description of the invention State of the art Criticism of the state of the art (disadvantages, deficiencies, risks) Defintion of the problem to be solved Explanation of the approach Description of the solution Examples

37 Structure of patent applications Claims define the extent of protection of the invention = core of the patent application Drawings used for clarification and explanation of correlations (useful for further understanding)

38 INID-Codes International agreed numbers for the identification of data Possibility of identifying different details on patent documents without knowing the specific language of the patent Can be found in detail on the internet:

39 Dr. Annekathrin Axel Koch, Dagmar Seifert, Vössing, Axel Koch, Gerd Dr. Schneider Hauke Studier